[gnso-rpm-wg] FOR DISCUSSION: Updated TMCH Charter Questions table - 6 December 2016

Paul Keating Paul at law.es
Tue Dec 13 12:08:39 UTC 2016


Good point Massimo.

I just suggested a revision and I believe that a geographic term is
descriptive and thus would be included in my proposal ( duplicated below)

Should the scope of the TMCH be limited in its application to trademarks
containing dictionary terms which are generic or descriptive?  If so how?

Paul

From:  <gnso-rpm-wg-bounces at icann.org> on behalf of Massimo Vittori
<massimo at origin-gi.com>
Date:  Tuesday, December 13, 2016 at 11:21 AM
To:  Mary Wong <mary.wong at icann.org>, "gnso-rpm-wg at icann.org"
<gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] FOR DISCUSSION: Updated TMCH Charter Questions
table - 6 December 2016

> Thank you Mary. 
>  
> If still possible, in the final set of questions (questions 10 and/or 14), I
> believe a specific reference to Geographical Indications should be made, to
> better reflect the discussion within the WG.
>  
> Best,
>  
> Massimo
>  
> 
>  
> Mr Massimo Vittori
> Managing Director ­ oriGIn
> 1, rue de Varembé 1202, Geneva, Switzerland
> Telephone: +41 (0) 22 755 07 32
> E-mail: massimo at origin-gi.com <mailto:massimo at origin-gi.com>
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>  
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> CONFIDENTIALITY NOTICE: The contents of this e-mail message and any
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> 
> From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
> Behalf Of Mary Wong
> Sent: 06 December 2016 19:33
> To: gnso-rpm-wg at icann.org
> Subject: [gnso-rpm-wg] FOR DISCUSSION: Updated TMCH Charter Questions table -
> 6 December 2016
>  
> Dear all,
>  
> In response to Phil¹s request, staff has updated the previously-circulated
> table of suggested TMCH Charter Questions with additional suggestions and
> comments received from Working Group members up to 1800 UTC today (6
> December), which is 24 hours before the Working Group call. The updated
> document is attached, and we will plan on using it as the basis for discussion
> on the Working Group call tomorrow. Please feel free to send any additional
> thoughts and comments you may have to the Working Group mailing list ­ while
> they may not all be captured in the document, staff will do our best to ensure
> they are covered during the Working Group¹s discussion.
>  
> As we move into discussion and finalization of the proposed TMCH Charter
> Questions, Working Group members may wish to note that the TMCH Data Gathering
> Sub Team had agreed on a list of questions that were sent to the TMCH
> Providers as well as others that were sent to the Registries and Registrars
> Stakeholder Groups. In line with their mandate, the Sub Team¹s questions are
> all directed toward obtaining relevant data on the workings of the TMCH ­ for
> purposes of the current discussion, the questions that were directed to the
> TMCH Providers include questions on design marks and their verification, the
> handling of cancelled or expired trademarks by the TMCH, and the various
> outreach efforts that were undertaken (among others).
>  
> If you are interested, the final sets of questions that were sent by the TMCH
> Data Gathering Sub Team to Registries, Registrars and the TMCH Providers can
> be viewed here: https://community.icann.org/x/VAmsAw
> <http://mtrack.me/tracking/raWzMz50paMkCGZmZmL5ZGN3ZwRzMKWjqzA2pzSaqaR9AQV0AmH
> 5ZmR2Way2LKu2pG0kZGRjBGp2AmZlAHR> .
>  
> Thanks and cheers
> Mary
>  
> 
> From: <gnso-rpm-wg-bounces at icann.org> on behalf of Phil Corwin
> <psc at vlaw-dc.com>
> Date: Tuesday, December 6, 2016 at 23:49
> To: John McElwaine <john.mcelwaine at nelsonmullins.com>, David Tait
> <david.tait at icann.org>, "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
> categories document - 2 December 2016
> 
>  
> Thanks for the feedback, John.
>  
> Perhaps it would be best if at this point in the discussion staff would post
> the current language of the question, so that we can review any specific
> suggestions for alteration of its wording.
>  
> Best to all.
>  
> 
> Philip S. Corwin, Founding Principal
> Virtualaw LLC
> 1155 F Street, NW
> Suite 1050
> Washington, DC 20004
> 202-559-8597/Direct
> 202-559-8750/Fax
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>  
> Twitter: @VlawDC
>  
> "Luck is the residue of design" -- Branch Rickey
>  
> 
> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
> Behalf Of John McElwaine
> Sent: Tuesday, December 06, 2016 9:49 AM
> To: David Tait; gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated
> categories document - 2 December 2016
>  
> The point that Kiran is making  is that words such as ³generic² mean
> something.  While it is possible to have a dictionary term as a domain name or
> mark, it is not possible to have a domain name or mark that is generic, solely
> because it can be found in the dictionary.  An extra step of analysis and
> investigation is required, which is likely outside the scope of this Working
> Group¹s remit and capabilities and outside the remit and capabilities of the
> TMCH.
>  
> Legally speaking, generic terms are words that the relevant purchasing public
> understands primarily as the common or class name for the goods or services.
> Applying United States trademark law, determining whether a mark is generic
> requires the finder of fact to examine (1) the genus of the goods or services
> at issue; and (2) whether the relevant public understands the applicant's
> mark/designation primarily to refer to that genus of services.  H. Marvin Ginn
> Corp. v. International Ass¹n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q.
> 528, 530 (Fed. Cir. 1986).
>  
> So to determine whether a mark is considered "generic" there must be an
> initial analysis of whether the mark is a word that is a genus of a quality,
> feature, function, or characteristic, but of what?  In order to answer the
> rest of the question, we would be forced to look at the goods or services
> claimed in the registration or the content and/or stated mission and purpose
> of the domain name, to make a determination of genericness.  Complicating
> things, this analysis is not a bright line analysis and there are several
> nuances to the relatively straight-forward test set forth above.  For
> instance, a word that has been used on a wide range of different types of
> products or services that are not within the same species may be less likely
> to be considered generic. See 2 J. Thomas McCarthy, McCarthy on Trademarks and
> Unfair Competition § 12:23 (4th ed. 2009).  Moreover, a proper analysis
> requires an in-depth factual investigation of the relevant public's
> understanding of the alleged generic term.
>  
> As we have discussed on our calls,  it is important to be precise in our
> terminology and for the reasons set forth above, I think we should remove the
> term ³generic² from our discussions relating to the TMCH and dictionary terms.
> It would be a large (that may be an understatement) undertaking for this
> Working Group or the TMCH to make an accurate determination of whether a mark
> in the TMCH is generic or whether a domain name registrant (with a mark in the
> TMCH) intends to use it in a manner that would be considered generic.
>  
> Thanks,
>  
> John
>  
>  
>  
>  
>  
> 
> From:gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On
> Behalf Of David Tait
> Sent: Tuesday, December 06, 2016 5:54 AM
> To: gnso-rpm-wg at icann.org
> Subject: [gnso-rpm-wg] FW: Updated TMCH Charter Questions tabulated categories
> document - 2 December 2016
>  
> Dear All
>  
> At Kathy Kleiman¹s request, and to facilitate discussion of this, issue staff
> is circulating the email below to the full Working Group.
>  
> Kind regards,
> 
> David
>  
> 
> From: Kathy Kleiman <kathy at kathykleiman.com>
> Date: Sunday, 4 December 2016 at 19:40
> To: Kiran Malancharuvil <Kiran.Malancharuvil at markmonitor.com>, David Tait
> <david.tait at icann.org>
> Cc: Mary Wong <mary.wong at icann.org>, Susan Payne <susan.payne at valideus.com>,
> Edward Morris <edward.morris at alumni.usc.edu>, Phil Corwin <psc at vlaw-dc.com>,
> "Sarahliannec at gmail.com" <Sarahliannec at gmail.com>, Paul Keating <paul at law.es>,
> "kurt at kjpritz.com" <kurt at kjpritz.com>, "gpmgroup at gmail.com"
> <gpmgroup at gmail.com>, "Vaibhav Aggarwal, Group CEO & Founder"
> <va at bladebrains.com>, Sarah Clayton <Sarahliannec at gmail.com>
> Subject: Re: Updated TMCH Charter Questions tabulated categories document - 2
> December 2016
> 
>  
> I don't think anyone understood why it was legally inappropriate, Kiran. You
> referenced a discussion that took place a long time ago, and after which there
> was considerable discussion and disagreement online.
> 
> One major reference for the definition of "generic words" used in this
> question is the International Trademark Association. It's Fact Sheet on
> Trademark Strength references generic words and instructs:
> 
>         => "Generic Words: A generic word or phrase is so inherently
> descriptive of a product or service or an entire class of products or services
> as to be incapable of ever functioning as a trademark. Generic words can be
> thought of as the common name of the product or service in question‹for
> example, ³clock² is a generic word for timepieces. Such words can never be
> appropriated by a single party as trademarks for the products or services they
> signify, since the public perceives and uses them solely as common nouns or
> terms. Generic words or phrases are not registrable or protectable in relation
> to the products or services they signify."
> http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkStrengthFactShee
> t.aspx[inta.org] 
> <http://mtrack.me/tracking/raWzMz50paMkCGZmZmL5ZGN3ZwRzMKWjqzA2pzSaqaR9AQV0AmH
> 5ZmR2Way2LKu2pG0kZGRjBGp2AmZlAyb>
> 
> So the question of whether, through the TMCH Database or its associated Rights
> Protection Mechanisms, is granting protection to a trademark, which also
> happens to be a generic word (see INTA above), beyond its categories of goods
> and services is a fair one.
> 
> Besides, there were numerous charter questions on this issue. We can't simply
> delete it.  But if you would like to offer a clearer way to phrase the
> question, please do.
> 
> Best, Kathy
> 
>  
> 
> On 12/4/2016 12:54 PM, Kiran Malancharuvil wrote:
>> Hi David,
>>  
>> I wasn't able to attend the call on Friday. Can you please explain why
>> Question 10 was marked green for accepted with legally inappropriate
>> terminology?
>>  
>> Thanks,
>>  
>> Kiran
>>  
>> Kiran Malancharuvil
>> Policy Counselor
>> MarkMonitor
>> 415-419-9138 (m)
>>  
>> Sent from my mobile, please excuse any typos.
>>  
>> On Dec 4, 2016, at 9:26 AM, David Tait
>> <david.tait at icann.org<mailto:david.tait at icann.org>> wrote:
>>  
>> Dear All
>>  
>> Following our call on Friday I am pleased to enclose the notes and outcomes
>> from the meeting. Alongside these notes I attach an appropriately updated
>> version of the TMCH Charter Questions document.
>>  
>> The notes and outcomes are as follows:
>>  
>>  
>> *         Q10 - Should be marked green for accepted.
>>  
>>  
>> *         Q13 and 14- Proposal to merge Q13+14: "How accessible is the TMCH
>> database and RPM Rights Protection Actions and Defenses to individuals, orgs,
>> trademark owners and trademark agents in developing countries?"
>>  
>> Proposal to keep question in but report findings to SubPro WG.
>>  
>>  
>> *         Q15- (now question 14 in latest draft) Revision agreed to "What
>> concerns are being raised about the TMCH being closed, what are the reasons
>> for having/keeping the TMCH Database private, and should the TMCH Database
>> remain closed or become open?"
>>  
>>  
>> *         Q16- (now question 15 in latest draft) Proposal 1 "Does the present
>> structuring of the TMCH optimize such operational considerations as cost,
>> reliability, global reach, and service diversity and consistency, or should
>> significant changes be considered?"
>>  
>> Proposal 2 "What are the concerns with the TMCH Database being provided by a
>> single Provider - and how might those concerns be addressed?"
>> Both proposals to go to the Working Group.
>>  
>> Should there be regional service desks if not regional providers?
>>  
>>  
>> *         Q17- (now question 16 in latest draft) Agreed revision: "Are the
>> costs and benefits of the TMCH, for rights holders, for ICANN, for the
>> community, proportionate?"
>>  
>>  
>> I would also note that further to Mary Wong's email of 1 December 2016 we
>> will now proceed to circulate this updated document to the full Working Group
>> in advance of the next Working Group call on Wednesday.  Additionally, we
>> will note that the Sub-Team is expressly seeking the input of the full
>> Working Group on the alternative formulations of Question 16 (this being the
>> only outstanding question not agreed by the Sub-Team).
>>  
>> Kind regards,
>>  
>> David
>>  
>> David A. Tait
>> Policy Specialist (Solicitor qualified in Scotland, non-practicing)
>> Internet Corporation for Assigned Names and Numbers (ICANN)
>>  
>> Mobile: + 44-7864-793776
>> Email:  david.tait at icann.org<mailto:david.tait at icann.org>
>> www.icann.org[icann.org]
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>> H5ZmR2Way2LKu2pG0kZGRjBGp2AmZlA1x>
>>  
>> <Tabulated Categories - TMCH Questions 2 Dec 2016.docx>
>  
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